what every CHEMIST should know about PATENTS Foreword Disclaimer

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1 what every CHEMIST should know about PATENTS Written and edited by Le-Nhung McLeland for the ACS Joint Board Council Committee on Patents and Related Matters Foreword The American Inventors Protection Act (AIPA) of 1999 introduced major changes in U.S. patent laws. Among the most significant changes: A U.S. patent application is no longer kept in secrecy by the U.S. Patent and Trademark Office (PTO), but is usually published 18 months after the application filing date. The term of protection granted for a patent is now adjusted to compensate for delays caused by the PTO during the examination of the application from which the patent was granted. In addition to the changes enacted by the U.S. Congress in the AIPA, administrative initiatives taken by the PTO at the end of 2000 are also greatly changing the practice of patent law by providing for online filing of a patent application and making available for online review the PTO s internal data on the history and status of a patent application. In light of all these changes, the Subcommittee on Education of the ACS Joint Board Council Committee on Patents and Related Matters prepared this third edition of What Every Chemist Should Know About Patents to update the 1997 edition. Review of the draft by the ACS Younger Chemists Committee is gratefully acknowledged, as well as support from the ACS Corporation Associates for the first print of this pamphlet. Disclaimer The purpose of this pamphlet is to provide you with a brief overview of patents. This booklet is for information only and is not meant to replace legal advice; we recommend that you direct legal questions to a patent attorney or patent agent on the register of the U.S. Patent and Trademark Office. American Chemical Society Office of Legislative and Government Affairs th St., NW Washington, DC chemistry.org Revised 1988, 1997, 2002 Copyright 1988, 1997, 2002 American Chemical Society Photo duplication of this handbook for noncommercial purposes is encouraged. Please give proper credit. 1

2 Table of contents 2 Introduction The basis for U.S. patent rights Subject matter patentable in the United States Subject matter not patentable in the United States Conditions for patentability in the United States One-year grace period in the United States Description requirements for U.S. patent application U.S. patent rights are rights of exclusion Three types of U.S. patents Who is an inventor? Overview of the U.S. patenting process: An example What does a U.S. patent look like? What does a published U.S. patent application look like? How to obtain information on patents and published patent applications.. 8 How to calculate the term of a U.S. patent The option of electronic application filing The option of filing a provisional application Application fees Proof of priority of invention (first to invent) Disclosure document program of the PTO Statutory invention registration Enforcing a U.S. patent The new provisional patent rights The new first inventor defense for methods of doing business Post-issuance processes before the PTO: Reissue, reexamination First-to-invent patent system is unique to the United States Extending patent protection to other countries National security considerations: Secrecy order, foreign filing license Closing remarks Text notes Glossary of abbreviations and terms Resources ACS Joint Board Council Committee on Patents and Related Matters.22 Appendix 1. Example of a U.S. patent Appendix 2. First U.S. patent application publication

3 Introduction A chemical scientist or engineer may encounter patents in various ways: as citations in the chemical literature; when preparing a patent application, as an inventor or in some other capacity; when involved in the negotiations for licensing a patent; or in the case of a patent that is the subject of litigation, when helping to assert the patent against an accused infringer, for example, by analyzing a product to help establish infringement; helping to defend against a charge of infringement of the patent; serving as an expert witness; or helping to attack or defend the validity of the patent. A patent is a form of property known as intellectual property. It can be licensed, sold outright, exchanged, or even given away. Some patents prove to be commercially valuable; others may have little or no commercial value. Statistics on the number of U.S. patents granted every year are available from the PTO, in print and on the PTO s website at The data are presented in various formats. For example, a ranked listing of all organizations granted 30 or more patents in a year is available, as well as a breakdown of U.S. patents by country of origin. Patenting nowadays is very much an international phenomenon. In the following discussion, the main focus is on U.S. patents, with brief comments on patenting procedures in other countries. The basis for U.S. patent rights U.S. patent rights are based on Article I of the U.S. Constitution, which states that the Congress shall have power... to promote the progress of science and useful arts, by securing for limited times to inventors the exclusive right to their discoveries. The patent laws enacted pursuant to this clause of the U.S. Constitution provide that whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title (35 U.S.C. 101). Patent rights are commonly viewed as a necessary incentive for private investment in scientific and technical research and development. The justification for the patent monopoly is an issue that is revisited periodically, particularly in developing countries faced with major public health crises where patents may be viewed as unwarranted obstacles in the efforts to address those crises. Nevertheless, patenting is becoming increasingly accepted in the global economy. In return for the grant of U.S. patent rights, an inventor is required to describe the invention in a patent in a manner sufficient for others to practice the invention. After the term of protection granted with the patent has expired, anyone can practice the invention freely, which may benefit society at large. Disclosing the invention in a patent, as opposed to keeping the invention secret, may also spur others to improve on the patented technology and produce yet another invention that may also benefit society. Subject matter patentable in the United States As indicated in the language of the patent statute cited above (35 U.S.C. 101), the following subject matter may be patented in the United States: a process, a machine, a manufacture (i.e., a manufactured product), or a composition of matter. In the chemical and allied fields, a patent may protect any of the following subject matter that falls into at least one of the categories cited above: a compound, which may be defined as a class of compounds or as a specific compound or group of specific compounds; a composition containing the compound; an article made from the compound or containing the compound; a process for preparing the compound; or a method of using the compound for a specific purpose (e.g., for curing a polymer system or for treating a medical condition). Subject matter not patentable in the United States The following subject matter cannot be patented in the United States because of specific prohibitions in the patent statutes or as a result of court decisions interpreting and applying those patent statutes: inventions useful solely in the utilization of special nuclear materials or atomic energy for atomic weapons; or 3

4 laws of nature, physical phenomena or scientific principles, abstract ideas, purely mental processes, and mathematical algorithms. Conditions for patentability in the United States As set forth in 35 U.S.C. 101, to be patentable, an invention must be new or novel and be useful or have utility. In addition, 35 U.S.C. 103 requires that the invention be non-obvious. Together, the three requirements of utility, novelty, and non-obviousness are commonly known as the three statutory requirements for patentability in the United States. One-year grace period in the United States An application for a U.S. patent must be filed no later than 1 year after the earliest date on which the invention was disclosed in writing anywhere in the world to the public (such as in a paper delivered at a scientific conference or an article published in a journal); or the invention was offered for sale in the United States, such as by providing a nonconfidential sampling to another party; or the invention was actually sold in the United States. If the inventor fails to file a U.S. application within that 1-year period (known as the grace period), the public disclosure, the offer for sale, or the sale of the invention prevents a valid patent from being issued to the inventor for that invention. The one-year grace period is also available for a U.S. patent application which claims priority based on an earlier filed foreign patent application, in which case the foreign application must be filed within the one-year grace period. However, there is no similar grace period available for patent applications in most other countries. (See First-to-invent patent system on page 13). Description requirements for U.S. patent application An invention that meets the three statutory requirements of utility, novelty, and non-obviousness nevertheless cannot be patented unless the patent application for the invention satisfies the following requirements of 35 U.S.C. 112: the application must contain a written description of the invention; the description must be sufficient to enable any person skilled in the art to which it pertains to make and use the same; and the description must set forth the best mode contemplated by the inventor of carrying out his or her invention. These description requirements are meant to ensure that the patent applicant delivers on his or her end of the bargain, by which a patent monopoly is granted in return for the public disclosure of the invention. U.S. patent rights are rights of exclusion A U.S. patent grants to an inventor the right to exclude others from making, using, importing, or selling the patented invention for a specified period of time (i.e., the term of the patent) in the United States. A patent does not give the patentee the right to practice the invention. In some cases, the ability to practice the patented invention may be circumscribed by factors such as the existence of patents for the same technology that are owned by other parties, or the existence of restrictions imposed by laws other than patent laws. Three types of U.S. patents Three types of patents are granted in the United States: utility patents, which constitute the greatest portion of U.S. patents and generally provide the strongest form of patent protection; plant patents, which could be considered a subgroup of utility patents granted exclusively for asexually reproduced new plant varieties (i.e., plants reproduced by methods other than seeds [1]); and design patents, which provide protection for a shorter term than utility patents for the ornamental designs of articles having a practical utility. 4 Who is an inventor? Under U.S. laws, an inventor is defined as the person who originated the mental conception of an invention and completed the reduction to practice of the invention. The mental conception must be a complete conceptualization of how to proceed for completing the invention, as opposed to being a mere idea without a specific plan for realizing the idea. The reduction to practice is the actual making of the invention.

5 The mental conception must be the inventor s own. In contrast, the physical steps necessary to complete the reduction to practice of the invention may be performed either by the inventor or by another person under the direction of the inventor. U.S. laws also consider the filing of a patent application to be a form of reduction to practice of the invention, that is, the filing of the application constitutes constructive reduction to practice of the invention. Overview of the U.S. patenting process: An example For illustration, the process for obtaining a U.S. patent is described in this section for an invention made by inventor A in organization X. This example shows a typical path for illustration. In practice, the patenting process before the PTO may vary greatly from case to case. Inventor A conceives of the idea (i.e., thinks of the idea) for an improved method of making a compound in a greater yield than was previously possible. In this case, inventor A writes a proposal that describes the steps of the synthesis, and the proposal is reviewed and approved by a supervisor. (Note: The inventor s proposal is evidence of the conception of the invention by inventor A.) Inventor A carries out the synthesis of the compound with the help of a laboratory technician who conducts the experiments as instructed by inventor A. The experiments are recorded in a laboratory notebook kept by the technician. The notebook entries are dated and witnessed daily by a coworker of inventor A who is not working on the synthesis project. (Note: The performance of the synthesis by the technician under the direction of inventor A constitutes reduction to practice of the invention.) Inventor A prepares an invention disclosure by following the guidelines and using the form provided by the patent administrator of organization X. The invention disclosure identifies the pages of the laboratory notebook where the experimental results are recorded. A committee of organization X, of which the patent administrator is a member, reviews all the invention disclosures received in the last calendar quarter for inventions made in organization X. The committee selects the improved synthesis developed by inventor A for patenting. The patent administrator has a patent application prepared by a patent attorney or patent agent, who may work directly with inventor A in addition to interacting with the patent administrator in preparing the patent application. The text of the patent application must have at least the following parts: a description of the invention, known as the specification, that is sufficient to illustrate the invention and to show a person in the same technical field how to make and use the invention defined in the claims of the application. The description may include a discussion of the technical/scientific background and some experiments illustrating the invention; at least one claim, worded in such a precise and clear manner that the subject matter protected by the patent can be readily ascertained from the claim; and an abstract of the invention described in the application. Some applications may also contain figures of line drawings or photographs, amino acid sequences, or computer program text, as appropriate. Once a patent application has been filed with the PTO, it cannot be modified unless the modification is considered to add no new matter to the application. Only revisions of an editorial nature and those supported by the original application (i.e., revisions that are inherent in or evident from the original text) are permitted. The text of the patent application eventually becomes the text of the patent that issues from the application, with the incorporation of any changes made during the PTO s examination of the application. Although an inventor may file and prosecute a patent application (2), experience has shown that it is important for the application to be prepared by a patent professional to minimize defects in the application at the onset. The patent professional may be a patent agent or patent attorney. A person with sufficient appropriate experience, although not recognized and registered by the PTO as an agent or attorney, can help with the application preparation but cannot represent the inventor before the PTO. Although the assistance of a patent professional is recommended for the preparation of the patent application, the input of the inventor is of utmost importance. With knowledgeable participation by the inventor, it is possible to write a patent application strategically to protect those aspects of the invention that are potentially most important, and to make it difficult for the competition to circumvent the patent. A U.S. patent application for inventor A s invention is filed by submitting to the PTO the application papers that include at a minimum: the text of the application, including the specification, claims, abstract, and any drawings, photographs, sequence listing, or computer program text, as appropriate; 5

6 an oath or declaration for patent application; and the application filing fee. 6 The oath or declaration is a statement signed and dated by inventor A declaring that inventor A believes he or she is the sole inventor of the invention described and claimed in the application. The declaration also acknowledges the inventor s duty to disclose to the PTO any information known to the inventor that may affect materially the patentability of the invention and should be considered by the patent examiner during the examination of the application. Filing of the declaration may be deferred until receipt of a notice from the PTO requiring submission of the declaration together with a surcharge for the late submission. The payment of the application filing fee may also be deferred until receipt of a notice from the PTO requiring payment to complete the application filing. Information on the application filing fee and other PTO fees is available from the PTO s website ( In this illustration, because inventor A s employment contract with organization X specifies that all inventions made by A in the course of A s work for organization X belong to the organization, an assignment form is signed and dated by inventor A, assigning (i.e., transferring) A s rights in the invention to organization X. The assignment is submitted to the PTO, which records the transfer. This assignment may be submitted either at the same time as the original application papers or at a later date. The assignment is kept in separate records at the PTO and is not placed in the PTO s file for the application. The public can search the PTO s assignment records to determine the ownership of a particular patent. The PTO assigns the application a filing date, a serial number, a confirmation number, and a projected publication date. That information is printed on a filing receipt, which is sent by the PTO to the correspondence address given in the application. Ordinarily, the filing receipt also indicates that a foreign filing license is granted, which authorizes the applicant to file a patent application for the same invention in foreign countries. All foreign patent applications for the same invention must be filed within a year from the filing date of the U.S. application, to benefit from the filing date of the U.S. application under the terms of the Paris Convention. The patent attorney (or patent agent) and the patent administrator enter into their patent calendar dockets the deadline for foreign filing, that is, for filing patent applications for the same invention in other countries. A selection is made well in advance of that deadline of the countries and/or regional patent systems (such as the European Patent Office [EPO]) in which corresponding applications will be filed. Instructions are sent to patent agents registered in those countries (or in the regional patent organizations serving those countries) to prepare and file applications based on the U.S. application. In this illustration, the U.S. patent application was filed on or after November 29, 2000, which means that the application will be published as provided by the AIPA. The U.S. application is assigned by the PTO to a patent examiner. Patent examiners have backgrounds in science or engineering and receive training in patent examination from the PTO. Some examiners may also be part-time law students or attorneys. The examiner reviews the application with particular emphasis on the claims and conducts a search of the prior art, that is, the body of published information existing at the time of the filing date of the application. This prior art search nowadays is conducted electronically, although experienced examiners often have developed their own collection of paper copies of prior art relevant to their field of examination. The examiner selects a number of references (i.e., publications) considered to be particularly relevant to the invention as defined in the claims of the application, and cites those references on a notice of references cited. As in a typical case, the examiner issues a first office action, in which all or some of the claims of the application may be rejected as being unpatentable over one or more of the references listed on the notice of references cited. This type of rejection is known as a prior art rejection. Such prior art rejection may be on the grounds of anticipation, meaning that the examiner considers a single cited reference to describe all the features cited in the rejected claim. The rejection may also be on the grounds of obviousness, when the examiner considers that the subject matter of a claim would have been obvious from the teachings of one or more cited references, none of which taken individually shows completely all the features cited in the rejected claim. In addition to rejections based on prior art, the examiner may reject the claims for failing to define the claimed invention in sufficiently definite terms. The claims may also be rejected because the specification fails to provide a sufficient description of the invention being claimed or the best mode for practicing the invention. The examiner may also reject the claims on the grounds that the utility of the claimed subject matter has not been demonstrated convincingly, or the claimed subject matter is not the type of subject matter that can be patented under U.S. laws. In summary, the application examination process determines whether the claimed invention meets the statutory requirements for patentability (novelty, non-obviousness, and utility), and

7 whether the application meets the subject matter and description requirements mentioned above. The patent attorney/agent reviews this first office action and discusses the rejection with inventor A and the patent administrator for organization X. An agreement is reached among them on the approach to be followed for responding to the office action. The patent attorney/agent prepares a response (often referred to as an amendment) that is submitted to the PTO within the 3-month deadline set in the office action. The response presents arguments to rebut the assertion made by the examiner that the claims are not patentable over the references cited in support of the rejection of the claims. The response may also request that the claims be amended, in those cases where the patent attorney/agent and the applicant (i.e., the inventor and the inventor s employer) believe that the subject matter described in the prior art reference(s) cited by the examiner is fairly close to the subject matter of the rejected claims. The amendments and the arguments must be based on information already present in the originally filed application or on information known in the technical field of the invention at the time of the filing of the patent application. In addition, new information (usually in the form of experimental data) can be submitted to demonstrate the properties and/or operation of the invention. This new information has to be in a special format called a declaration or affidavit (3) signed by the person who obtained the experimental data or supervised the work of obtaining the experimental data. The declaration is not incorporated into the text of the patent issuing from the application, but is placed in the PTO s examination file for the patent (commonly known as the file wrapper or prosecution history for the patent). Within approximately 18 months of the U.S. application filing date, the PTO publishes the application. The publication takes place by way of posting on the PTO s website, without a hard copy publication. The published application enters into the body of prior art that is applied against other applications filed in the PTO after the filing date of inventor A s application or after the date of publication of inventor A s application. After reviewing the response filed by the attorney/agent in inventor A s application, the examiner issues a second office action, in which the examiner maintains the rejection of some of the claims but allows the remaining claims. This rejection is made final, which means that the applicant now has the option of appealing the rejection to the PTO s Board of Patent Appeals and Interferences. However, in practice few applicants appeal immediately, choosing instead to submit for the examiner s consideration a response to the final office action. In this illustrative example, only some of the claims are rejected and the remaining claims are allowed. The patent attorney/agent prepares a response, which specifically addresses and rebuts the comments made by the examiner in the final office action about the arguments previously presented by the attorney/agent. Note: If this second response fails to convince the examiner to allow the application, the applicant may proceed to the appeal stage before the Board of Patent Appeals and Interferences, or may choose to avoid the appeal stage by filing a request for continued examination (RCE) of the application or by filing a continuation application. By paying the fee for the RCE or the continuation application (which are essentially the same as the filing fee for the original application), the applicant in effect can buy a second round of examination for the application (4). Another option in this case is to cancel the rejected claims and let the application issue as a patent with the allowed claims. In summary, the give-and-take process between the applicant and the examiner often helps to narrow the issues and results in a meeting of the minds as to which aspects of the invention are patentable. This process is commonly referred to as the prosecution of the application. Upon consideration of the response to the final office action, the examiner decides in this case to allow all the claims of the application and issues a notice of allowance that sets a 3-month period for payment of the issue fee and payment of the application publication fee (5). If the patent attorney/agent pays the issue and publication fees in a timely manner, then the patent is issued a few months later. In this illustration, since there had been some delays in the PTO s handling of the application, a patent term adjustment (PTA) of 87 days is granted for this patent under the provisions of the AIPA. The PTA compensates the applicant for delays caused by the PTO in the examination of the application, from which are subtracted any delays caused by the applicant. The PTA is indicated on the cover page of a patent, but without any details on its calculation, which may be rather complicated. The applicant s representative may double-check that calculation by accessing online the PTO s application database, using the Patent Application Information Retrieval (PAIR) software provided by the PTO and a digital certificate that may be obtained from the PTO by the attorney/agent. The patent is added by organization X to its account with an annuity payment service (operated by a commercial entity). Before the first maintenance fee is due for payment (3 1 2 years after the issuance of the patent), the annuity payment service sends reminders to organization X, which instructs the service to pay the first maintenance fee. The value of the patent to organization X is 7

8 reassessed each time a patent maintenance fee is due. A decision may be reached at some point to not pay a maintenance fee and allow the patent to lapse because the value of the patent is outweighed by the increasing cost of the maintenance fee (the second maintenance fee is higher than the first maintenance fee, and the third maintenance fee is even higher). What does a U.S. patent look like? Under the AIPA, publication of a patent application precedes its issuance as a patent. However, chemists and engineers are more familiar with patents than patent application publications. For that reason, an issued patent is described first in the following section, before an application publication is described. The original patent grant, sometimes referred to as letters patent, is a ribboned official document issued by the PTO bearing the seal of the United States. The PTO issues patents every Tuesday. The official letters patent is sent to the patentee, and the PTO places copies into public circulation. A copy of a U.S. patent, now expired, is reproduced in its entirety in Appendix 1. This patent was selected because its text is relatively short. It serves as an example of a U.S. application that claims priority based on a foreign application (as indicated on the cover page of the patent); its claims illustrate a variety of chemical subject matter to which a patent claim may be directed. The format of a U.S. utility patent, as prescribed by the PTO, includes the following consecutive parts, which are all derived from the patent application: A cover page, showing at a minimum the patent number and issue date, the title of the invention, the names and residences of the inventors, the application number and filing date, the classification assigned to the patented technology, the references cited in the examination of the application, the name of the examiner for the patent, and an abstract describing the invention. The cover page may also cite any prior applications having an earlier filing date, the benefit of which is claimed in the patent. The assignee and the attorney for the patent may also be listed on the cover page. Drawings, photographs, sequence listings, or computer programs (not found in all patents). A specification, that is, a body of text describing the invention and corresponding to the specification originally filed for the patent application. At least one claim that defines the subject matter covered by the right of exclusion granted by the patent. The claims are the most legalistic aspect of a patent because they define the property held by the patentee. The invention claimed in the claims may be of the same scope as, or narrower than, the invention disclosed in the specification. Subject matter disclosed but not claimed is not protected by the patent, and the patent owner cannot prevent others from using it (6). However, the publication of that subject matter is prior art against subsequently filed patent applications. The patent illustrated in Appendix 1 has claims directed to a phosphite compound, defined generically (claim 1); a stabilizer combination (i.e., a composition) containing the phosphite compound (claims 2 and 3); a process of using the phosphite compound to stabilize polymers (claim 4 and claim 5, which depends on claim 4); and a plastic molding composition (claim 6) containing the phosphite as a stabilizer. What does a published U.S. patent application look like? All U.S. patent applications filed on or after November 29, 2000, are published by the PTO approximately 18 months after the application filing date, except for applications by independent inventors who have requested an exemption from publication. Patent applications are published every Thursday. The very first patent application published by the PTO (on March 15, 2001) is shown in Appendix 2. In appearance, a published application is very much like an issued patent. After an application is published, a copy of the papers in the application file kept by the PTO may be obtained for a fee from the PTO, ending the secrecy under which an application was previously kept. 8 How to obtain information on patents and published patent applications The text of U.S.-issued patents and published patent applications is available online from the PTO s website ( both in searchable full-text format or as images of the actual patent documents. The same information is also available from commercial database operators. Copies of the patents and published applications can be purchased directly from the PTO or from commercial database operators and other vendors. Collections of U.S. patents are available in every state of the United States from a number of university libraries and public libraries known as patent and trademark depository libraries (PTDLs) affiliated with the PTO. For information on those libraries, visit the PTO website or consult the ACS book, Understanding Chemical Patents (see the Resources section at the end of this booklet). The website of a PTDL that offers a tutorial for searching patent databases is also listed in the Resources section (see University of Texas at Austin). 8

9 U.S. patent term calculation Transition from the 17-year patent term to the 20-year patent term The following examples illustrate how three patents issued on the same date may have three entirely different patent terms as a result of the changes brought by the GATT/TRIPS legislation. The length of the patent term depends on the filing date of the application from which a patent issued and on whether the patent issued from an application that is a continuation or division of an earlier application. Application filed July 4, 1994 Issued June 8, 1997 Term ends: June 8, 2014 (17 years after issue) Application filed August 4, 1995 Issued June 8, 1997 Term ends: August 4, 2015 (20 years after application filing) 1st application filed December 6, nd application filed August 4, 1995, as continuation of 1st application Issued June 8, 1997 Term ends: December 6, 2014 (20 years after 1st application filing) June 8, 1995 cut-off date under GATT/TRIPS In the above scenarios, the 17-year patent term applies to applications filed before June 8, The 20-year method for calculating the patent term applies to applications filed on or after June 8, For patents in force on June 8, 1995 For patents issued before June 8, 1995, that are still in force on that date, the patent term is the longer of the term calculated by the 17-year method and the term calculated by the 20-year method, as shown in the following example. Calculation by 17-year method: Application filed December 6, 1994 Issued June 4, 1995 Term ends: June 4, 2012 (17 years after issue) Calculation by 20-year method: Application filed December 6, 1994 Issued June 4, 1995 Term ends: December 6, 2014 (20 years after application filing) As seen in the diagrams, the 20-year method of calculating the patent term results in a longer term than is obtained by calculation according to the 17-year term. Therefore, the term of the patent ends 20 years after the application filing date. This patent in effect received an extension of more than two years (from June 4, 2012, to December 6, 2014) of its patent term as a result of the enactment of the GATT/TRIPS legislation. Patent term adjustment (for delays in application examination) The GATT/TRIPS legislation made available a limited PTA, which the AIPA in effect broadened. A patent for which a PTA has been granted shows on its cover page the exact number of days of PTA. For example, a patent may have received a PTA in the amount of 23 days. In calculating the term for that patent, the 20-year term is first calculated. Then 23 days are added to that patent term to obtain the extended patent term. Patent term extension for pre-marketing clearance In addition to the PTA described, which compensates for delays caused by the PTO during the examination of the application, a patent term extension is available to compensate for postponement in the marketing of a patented product until regulatory pre-marketing clearance is received, such as in the case of pharmaceuticals undergoing review by the Food and Drug Administration. The PTO does not automatically calculate and grant such a patent term extension; it can be obtained only by submitting an application accompanied by supporting documents. In contrast, the PTA, which compensates for delays in examination of an application by the PTO, is automatically calculated by the PTO and printed on the face of the patent. 9

10 The PTO website provides a wealth of other information useful to a newcomer to patent law as well the experienced patent professional. How to calculate the term of a U.S. patent Until enactment of the GATT/TRIPS (General Agreement on Tariffs and Trade The Agreement on Trade-Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods) legislation in 1994, the term of a utility patent or a plant patent began on the date of issue (grant) by the PTO and ended 17 years after the issue date. That simple-to-calculate patent term changed, however, with the enactment of the GATT/TRIPS legislation. For a patent issuing from an application filed on or after June 8, 1995, the patent term still begins on the date of issue but ends 20 years from the effective filing date of the patent application from which the patent issued. For (a) a patent issued from an application filed before June 8, 1995, or (b) a patent already issued that is still in force on June 8, 1995 (i.e., has not lapsed for failure to pay a maintenance fee), the patent term is the longer of (a) the term as calculated under the old rule (i.e., 17 years from the issue date), and (b) the term as calculated under the new method (i.e., 20 years from the filing date). The AIPA made the calculation of a patent term even more complex, by providing a PTA to compensate for delays incurred during the PTO s examination of a patent application filed on or after November 29, (A more limited version of a PTA was already provided by the GATT/TRIPS legislation.) The PTA granted under the AIPA in effect guarantees a 17-year patent term as measured from the date of patent issue, to be reduced by any delays during the examination that are attributed to the applicant. In summary, the term of protection granted now varies from patent to patent, depending on the following factors, among others: how much time was taken up in the PTO s examination of the application; how much of the delay during examination is attributed to the applicant; whether the application is a continuation or a division for which the effective filing date is the filing date of a prior application; and whether the application is the U.S. national stage of an international patent application, in which case the 20-year period begins with the international filing date (see Extending Patent Protection to Other Countries for a description of the PCT system and timeline). A drawback of all these recent changes in the law governing patent term is that it is no longer possible for an uninitiated person to look at the face of a patent and determine whether its term has expired. Such determination now requires thorough consideration of rather complex rules. The PTO will print on the face of a patent the length of any PTA. However, the PTO will not print the expiration date on the face of the patent, apparently to prevent unwarranted reliance on that information in case a patent has lapsed before the expiration of its full term because a required maintenance fee was not paid. The maintenance fees for a U.S. patent are due at three successive intervals after the issue date of the patent and increase incrementally with each interval. A patentee who no longer has an interest in maintaining a patent can allow the patent to lapse by failing to pay a maintenance fee. The PTO publishes a notice of that lapse in its weekly Official Gazette, which can be purchased in hard copy or may be viewed on the PTO website. See sidebar on page 9 for examples that illustrate the calculation of patent terms. The option of electronic application filing In 2001, the PTO made electronic patent application filing through the Internet available to all applicants, following completion of a test pilot program. For electronic filing, the text of an application must be in XML tagged format (prepared with word processing software available from the PTO). All drawings including formulas must be converted to TIFF documents. The declaration for patent application is also converted to a TIFF document. The application documents are sent in encrypted form to the PTO using software provided by the PTO. The PTO expects that 80% of all patent applications will be filed electronically by 2006, and is expected to take actions as necessary to meet that target. 10 The option of filing a provisional application The legislation implementing the GATT/TRIPS provisions introduced a new form of U.S. patent application called a provisional application. Unlike a regular U.S. patent application, the provisional application need not contain any claims. The government fee required for the provisional application is small compared with the fee for a regular application. The provisional application is not examined for patentability by the PTO and does not issue as a patent. The intent behind the provisional application is to make it possible for an inventor to lock in an

11 application filing date at a lower cost and with less effort than would be required in the preparation and filing of a regular U.S. patent application. (In particular, a provisional application could be filed on short notice before the invention was disclosed to the public, e.g., before publication in a journal.) Within 1 year of filing a provisional application, the inventor must file in all countries in which patent protection is desired, including the United States, a regular application for the same invention as described in the provisional application. The provisional application automatically expires 1 year after its filing. A benefit to the applicant in filing a provisional application is that the 20-year period for calculating the patent term (for a U.S. patent issuing from the application) begins not with the filing date of the provisional application but with the filing date of the regular U.S. application that is based on the provisional application. At the same time, for the purpose of avoiding prior art references, the applicant benefits from the earlier filing date of the provisional application, yet without having the 20-year period for calculating the U.S. patent term be counted from the filing date of the provisional application. Another advantage is that any U.S. patent issuing from a regular application based on a provisional application is effective as prior art as of the filing date of the provisional application (as opposed to the filing date of the regular application) and thus may be more useful in preventing other parties from patenting similar inventions. The provisional application can also serve as the basis for the filing of an application in a foreign country or the filing of an international application within 1 year of filing the provisional application (7). A drawback of the provisional application procedure is that it may encourage applicants and their attorneys to prepare and file provisional applications with a lesser degree of care than would be given to a regular patent application, a fact that may be regretted later when the regular U.S. application and the foreign and/or or international patent applications are filed. It may be realized at that time that the provisional application may be lacking a fully adequate description of the invention to support the claim to priority (in those subsequent applications) for the earlier filing date of the provisional application. Application fees An application filing fee must be paid to the PTO when the patent application is filed. The basic filing fee is increased by a surcharge when the application contains more than 3 independent claims and/or more than 20 claims in total and also when the application contains 1 or more multiply dependent claims (i.e., a claim that depends on 2 or more other claims). Additional fees may become due during the examination of the application, for example, fees for an extension of a response period when the applicant s required response to an action of the PTO is filed after the original deadline set by the PTO. An issue fee is due after the application is allowed, and maintenance fees are due at successive intervals after the patent issues. The fee for the publication of the application under the provisions of the AIPA is also due after the application is allowed. Most PTO fees are subject to a reduction of 50% for an application that qualifies for small entity status, that is, when the application is assigned to a company having no more than 500 employees or to a nonprofit organization, or the application is by one or more inventors who are under no obligation to assign the application to an organization that does not qualify for small entity status. Proof of priority of invention (first to invent) A patent application contains no information on the actual date of invention of the subject matter claimed in the application. In most cases, there is no need for the applicant to offer any information about the date of invention. However, in some instances the applicant may have to prove that the invention was made before the effective date of a reference cited by the examiner in support of the rejection of the claims of the application. This proof of being first to invent is also necessary in an interference proceeding when two or more inventors (or groups of inventors) are attempting to patent the same invention. For the purpose of proving the date of invention, it is essential that the history of the development of the invention be recorded appropriately in laboratory notebooks. (See the ACS Recordkeeping Fact Sheet cited in the Resources section.) Until recently, the proof of invention was limited to activities in the United States. For proving priority of invention based on activities outside the United States, only the act of filing a patent application in a foreign country was accepted as proof, and only when the U.S. application claims the benefit under the Paris Convention of the filing date of that foreign application. The legislation implementing GATT/ TRIPS in the United States has changed U.S. patent laws greatly by permitting a patent applicant to rely on records of activities outside the United States, in addition to relying on the filing of a foreign patent application, to prove priority of invention. 11

12 Disclosure document program of the PTO The PTO provides a service for inventors by accepting and preserving for two years a disclosure document to serve as evidence of the date of conception of an invention. A minimal fee ($10) is charged for this service. If the disclosure document is not followed by the filing of a patent application that refers to the disclosure document, the PTO destroys the disclosure document two years after its receipt. The disclosure document program does not preserve an inventor s rights to an invention but merely provides a mechanism by which an inventor can prove a date of conception of an invention. Statutory invention registration In 1984, the U.S. Congress enacted legislation calling for the PTO to publish as a statutory invention registration (SIR) the text of the specification (and any drawings) of a regularly filed application for a patent under the conditions that the application meets the description requirements of 35 U.S.C. 112 (discussed on page 4) and that the applicant waives the right to a patent and pays the required publication fee. The SIR is published without examination, that is, without examination for patentability over the prior art. The SIR procedure is intended mainly for use by federal agencies to publish their research results and prevent another party from patenting similar research results and asserting the patent rights against the federal agencies. However, this form of defensive publication is also open to inventors outside of federal agencies. The recent advent of patent application publication under the AIPA is expected to lessen reliance on the SIR publication, since the application publication not only achieves the same results as a SIR publication but also presents additional benefits. First, the right to a patent is not waived in the case of an application publication. Second, the fee for the application publication is not due until the application is allowed. No fee is ever paid for the application publication if the application is not allowed and the application is abandoned. Enforcing a U.S. patent The rights granted with a patent begin at noon on the day of issuance of the patent, and the patent owner can begin enforcement of the patent on that day. Enforcement of a patent does not always require the filing of a lawsuit. When a patent owner believes that another party is infringing the patent, the patent owner usually has a study conducted to verify the validity of the patent and to confirm that the activities of the other party constitute infringement of the patent. Such a study is in the form of a legal opinion prepared by a patent attorney (8). After completion and review of the opinion, a warning letter may be sent to the alleged infringing party. The recipient of the letter may respond with an explanation of why there is no infringement. In other cases, there may be no response, at which point the patent owner must decide whether to further attempt to engage the other party in a dialogue. Such a dialogue may result in an agreement to settle the dispute and avoid litigation, which may be costly to both parties. In some instances, where the circumstances warrant it, a lawsuit is eventually filed. Under U.S. laws, a patent is infringed when the technology practiced by the alleged infringer meets exactly all the terms of at least one claim of the patent (a case of literal infringement), or the technology practiced by the alleged infringer comes so close to the invention defined in at least one claim of the patent that the practice is considered to be infringement under the doctrine of equivalents. The determination of infringement under the doctrine of equivalents is difficult, because the court decisions on the subject do not provide clear-cut guidelines, and interpretation by the courts of law in this area is constantly evolving. 12 The new provisional patent rights Under AIPA provisions, the publication of a U.S. patent application (or the publication of an international patent application that designates the United States and is published in English, as described in the section on Extending patent protection to other countries ) marks the beginning of the provisional rights that a patentee may enforce after a U.S. patent issues from the published application. The patentee may obtain reasonable royalties from a person who used the patented invention between the time of publication of the application and the issuance of the patent. These provisional rights are subject to a number of limitations, the most significant being that the invention claimed in the patent must be substantially identical to the invention as claimed in the published application. For this reason, upon request by the applicant accompanied by payment of a publication fee, the PTO will republish an application in its amended form so that the published claims are substantially identical to the claims in the patent that eventually issues from the published application.

13 The new first inventor defense for methods of doing business The AIPA created a new defense, known as the first inventor defense, to protect a first inventor from a charge of infringement of a patent granted to another inventor for a business method. For this defense the first inventor must prove that he or she in good faith had reduced to practice in the United States the invention for that method of doing business, and had used that invention commercially in the United States before the filing date of the application by the other inventor that issued as the patent in question. Since the first inventor defense is limited to patents for methods of doing business, the immediate application of the first inventor defense to the work product of chemical scientists is considered at this time to be limited. Post-issuance processes before the PTO: Reissue, reexamination After a U.S. patent issues, the following two procedures provide for a renewed examination of the patent: a reissue application and a request for reexamination. A reissue application is undertaken to correct a significant error in the application, usually in the claims, and can be filed only by the inventor or patent owner. A reexamination request can be filed by anyone, including a third party, such as a competitor. The U.S. Congress enacted legislation in 1984 to permit the reexamination of the claims of a patent in light of prior art references that are relevant but were not considered in the original examination. The AIPA of 1999 expanded reexamination by providing for an optional inter partes reexamination in which a third party requester of a reexamination can participate throughout the reexamination process. Prior to the AIPA, the participation of a third party requester ended with the filing of a request for reexamination. In any of these post-issuance reconsideration procedures (reissue, reexamination, or inter partes reexamination), the term of the original patent remains unchanged if the PTO concludes at the end of the reissue or reexamination procedure that the claimed subject matter is patentable. First-to-invent patent system is unique to the United States: No grace period in other countries The U.S. patent system is known as a first-to-invent system. It awards a patent to the party who is first to invent the subject matter claimed in an application (as opposed to the party who is first to file an application for the invention) as long as the application is filed within the year grace period discussed in the section One-year grace period in the United States. In contrast, other countries have a first-to-file patent system that awards the patent to the party who is the first to file an application, regardless of whether that party was first-to-invent. The most important thing an inventor planning to file patent applications in foreign countries should know is that there is no grace period in those countries. Most foreign countries will grant the benefit of the earlier filing date of the U.S. application to a foreign patent application that is filed within 1 year of the filing of the U.S. application. However, the patent laws of those countries require so-called absolute novelty for the invention at the time of the filing of the first application (i.e., the U.S. application in this case). That absolute novelty may be destroyed if there has been any public disclosure or sale of the invention before the filing of the U.S. application. Therefore, applicants must file their applications in the United States prior to any public disclosure or sale of the invention if they plan to seek patent protection outside the United States. There are also practical reasons for filing a patent application as soon as reasonably possible. The sooner the application is filed, the sooner it can be used as prior art against patent applications filed later by others. Also, an earlier filing can be beneficial if the application becomes involved in an interference. In such a proceeding, the PTO is asked to (or may on its own initiative) declare an interference because similar subject matter is claimed in two applications, A and B, pending in the PTO at the same time, or an application A and a patent issued from an application B that was copending in the PTO at some point in time with application A. The PTO determines in the interference proceeding which of the respective inventors (or groups of inventors) was first to invent the subject matter claimed in the applications or patent. The interference rules place the burden of proving prior inventorship on the party with the later-filed application. There is, therefore, a substantial advantage in being the first to have filed a patent application for the invention. Finally, another reason for filing a patent application as soon as possible is that in the following two situations, a patent applicant must prove that due diligence was exercised (i.e., that there was no unreasonable delay) in completing and filing a patent application: when the application is involved in an interference proceeding, and the applicant is first in conception of the invention but last in filing a patent application; and when the claims in the application are rejected by the PTO examiner over a prior art reference, and the applicant had conception of the invention before the publication date of the prior art reference, but filed a patent application after the publication date of the reference. 13

14 Extending patent protection to other countries A U.S. patent protects an invention in the United States only. To obtain worldwide protection, patent applications must be filed in the countries where patent protection is desired. Most patent-granting countries will give an applicant the benefit of the earlier application filing date in the United States. However, as discussed above, most countries also require absolute novelty as a condition for patentability. Starting from a patent application filed in the United States, an applicant may choose from two scenarios (shown in the figure) for filing corresponding applications in foreign countries. In the first scenario, known as the Paris Convention route, an application is filed within 1 year of the initial U.S. application filing in each of the selected foreign countries. In accordance with the Paris Convention for the Protection of Industrial Property, those countries grant to the applicant the benefit of the earlier U.S. filing date (9). The second scenario, known as the PCT route, involves filing an international application under the Patent Cooperation Treaty (PCT) in one of the receiving offices of the World Intellectual Property Organization (WIPO; 10). Applicants in the United States and other countries are increasingly using this PCT route. As shown in the figure (for a U.S. applicant), an international application is filed in the PTO, which serves as a U.S. receiving office. This international application is filed within 1 year of the initial U.S. application filing and claims priority under the Paris Convention based on the U.S. application. The international application designates the countries (or regional patent organizations such as the EPO [11]), in which the applicant wishes to obtain patents. The international application is published by WIPO approximately 18 months after the international filing date (or the priority date if priority is claimed), the publication being in the language in which the application is filed. The published application shows the countries designated by the applicant, which informs other parties of the applicant s intention to pursue a patent in those countries. Within 30 months (12) from the initial U.S. filing date, known as the priority date, the applicant must complete the formalities for entering into the national stage of the international application for each of the designated countries. Those formalities include paying the official filing fees and submitting translations (if necessary) of the international application into the languages accepted by the designated countries. Each of the countries in the PCT system accords to the national stage application the benefit of the earlier international application filing date, and in the case where the international application claims the benefit under the Paris Convention of an earlier domestic application (which is the U.S application in the second scenario shown in the figure) each country in the PCT system accords to the national stage application the benefit of that earlier priority date. Two routes for filing applications in other countries 1 year Paris Convention Route U.S. application filing Foreign application filing 1 year 20 or 30 months PCT Route U.S. application filing PCT International application filing National stage entry in designated country/regional system 14 The entry into the national stages described above is according to the provisions of Chapter I of the PCT. The deadline under Chapter I was previously 20 months after the priority date. However, it was recently changed to 30 months for international applications for which the period of 20 months expires on April 1, As permitted by the PCT, certain PCT member countries (e.g., the U.K. and Japan) are not adopting immediately the new deadline because it conflicts with their national law.

15 For such countries, the deadline for national stage entry is still 20 months from the priority date until further notice. In such countries, a PCT applicant must file a Demand for International Preliminary Examination under Chapter II of the PCT if the applicant wishes to delay entry into the national stages. The deadline for such entry into the national stages under Chapter II is 30 months from the priority date. A benefit of choosing the PCT route shown in the figure is that it permits an applicant to postpone the costs associated with filing applications in foreign countries and even postpone the final selection of those countries. For a relatively small designation fee, an applicant in effect can preserve for a time period after the filing of the international application (8 months under current rules and 18 months under the revised rules effective April 1, 2002) the option of filing applications in all the countries belonging to the PCT system, of which there are currently about 115. Under current PCT rules, a further postponement up to 30 months from the priority date may be obtained by filing a demand (accompanied by a fee) for an international preliminary examination. After April 1, 2002, such demand is not even necessary for obtaining a 30-month period for entry into the national stages. Patent laws differ from country to country, so it may be easier to obtain patents in some countries than in others. Unfortunately, whether effective enforcement of patent rights can be obtained also varies from country to country. Since patenting worldwide is very expensive, applicants usually weigh the prospects for successful enforcement when deciding where to seek patent protection outside the United States. National security considerations: Secrecy order, foreign filing license In its initial review of patent applications, the PTO may identify some applications as potentially affecting U.S. national security. Such applications are subject to further review, which in some instances may result in the imposition of a secrecy order for a period of at most 1 year (subject to extension by renewal of the secrecy order). During that period, the invention must be kept secret, and the grant of a patent on the invention is withheld. A related security requirement is that no patent application may be filed in a foreign country on an invention made in the United States unless a patent application for the invention has been first filed in the United States and the applicant waits for at least six months before filing the foreign application or obtains a foreign filing license. Ordinarily, the official filing receipt issued by the PTO for the application contains a notice to the applicant that a foreign filing license has been granted. Even if no official filing receipt has been received yet, the applicant is free to file an application in the foreign country at the end of the sixmonth period following the U.S. filing date. Closing remarks It is impossible to provide in this introductory booklet all of the information that may interest chemical professionals. A Resource section is provided for researching specific areas and general reading. The list is just a sampling of the many sources of information available that are constantly increasing. As with any information on the Internet, the reader must be alert and exercise good judgment. In the AIPA, the U.S. Congress directed the PTO to serve as watchdog over invention promotion companies, some of which have been known to prey on independent inventors who come to them for help in promoting their inventions. The section of the PTO s website for independent inventors should be consulted for information on complaints lodged against invention promotion companies, as well as for general information on patents. Text notes (1) Plants reproduced by seeds may be protected by a Certificate of Plant Variety Protection issued by the U.S. Department of Agriculture. Plants created by biotechnology may be protected by regular utility patents (as opposed to plant patents). (2) The word prosecution as used in patent prosecution has an entirely different meaning than it does in a criminal context. Patent prosecution refers to the interactive process that takes place between the PTO and the applicant during the examination of an application. In this context, prosecution in effect means solicitation. (3) This declaration or affidavit, known as a declaration or affidavit under Rule 132, is different from the declaration or oath for patent application signed by the inventors to complete the filing of a patent application. (4) The practice of filing a continuation application or obtaining another round of examination by other mechanisms provided by the PTO previously had no effect on the term of a patent issuing from the application. However, as a result of the enactment of the GATT/TRIPS legislation in 15

16 1994, such practice may shorten the patent term by prolonging the prosecution of the application. (5) The AIPA permits the PTO to collect from an applicant a fee for the application publication only after the application has been allowed. (6) This issue is currently under review en banc (i.e., by the entire court as opposed to a panel of three judges from the court) by the Court of Appeals for the Federal Circuit. (7) There was some initial doubt about whether a U.S. provisional application could serve as the basis for a foreign or international application. An exchange of written communications between the U.S. Commissioner of Patents and Trademarks and the head of the World Intellectual Property Organization has confirmed that priority can be claimed in an international application based on a U.S. provisional application. However, some concerns still remain about whether the European patent court will grant the benefit of priority to a European application based on a U.S. provisional application. (8) Patent agents are registered by the PTO and are authorized to represent a patent applicant in proceedings before the PTO but are not qualified to render opinions on the validity or the infringement of a patent. (9) A similar filing may be effected in a country such as Taiwan, which does not adhere to the Paris Convention but grants priority based on U.S. patent applications. (10) The World Intellectual Property Organization, an agency of the United Nations, is headquartered in Geneva, Switzerland, and administers the PCT system. See for an introduction to the PCT system. (11) In a regional patent organization the application is initially processed and reviewed, with subsequent transfer of the proceedings to the national patent-granting organizations of individual countries that belong to the regional patent organization. (12) In a recently adopted change effective April 1, 2002, this PCT deadline for entry into the national stages will be 30 months instead of 20 months. Glossary of abbreviations and terms AIPA American Inventors Protection Act of 1999 CAFC Court of Appeals for the Federal Circuit EPO European Patent Office GATT-TRIPS General Agreement on Tariffs and Trade The Agreement on Trade-Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods IP Intellectual property PCT Patent Cooperation Treaty PAIR Patent Application Information Retrieval (software) PTA Patent term adjustment PTDL Patent and trademark depository library PTO U.S. Patent and Trademark Office RCE Request for Continued Examination SIR Statutory invention registration USC U.S. Code WIPO World Intellectual Property Organization 16 Abstract. The section of a patent that provides a brief summary of the invention described in a patent. Allowance (of application). Decision by patent examiner at the PTO to allow the claims of a patent application. Amendment (of part of application). A modification of a portion of an application, which may be in the specification, the claims, or the abstract. Amendment or response. A written response to an office action of the PTO rejecting the claims of a patent application. The response may request that amendments be made to the application. Annuity. A fee required to be paid annually to the patent-granting organization of a country to maintain a patent application or a patent. See Maintenance fee (for U.S. patents). Anticipation. The basis for rejecting a patent claim over a prior art reference that shows all the features cited in the claim. See Novelty. Application. A document submitted to the patent office of a country to describe an invention for which a patent is sought. Application publication. The publication by the patent office of a country or by WIPO of an

17 application submitted by an applicant for patent. The publication ordinarily occurs 18 months after the filing date of the application, or 18 months after the earliest claimed priority date. Assignment (of an invention). A document signed by the owner of an invention (the assignor) to transfer ownership of the invention to the assignee. See also License (of patent). Best mode disclosure. A requirement in U.S. patent law that the inventor disclose in the patent application the best mode for practicing an invention. Claim. A statement that defines the invention protected by a patent. An independent claim defines an invention without referring to another claim, for example, Claim 1. A compound represented by the following formula (I)... A dependent claim further defines the invention recited in another claim to which the dependent claim refers, for example, Claim 2. A compound according to claim 1, wherein X is hydroxyl. A multiply dependent claim depends on more than one claim, for example, Claim 3. A compound according to any one of claim 1 or 2, wherein Y is a heterocyclic aromatic fivemembered ring structure. Conception. The mental concept of an invention and how to make the invention. Continuing application (or continuation application). An application that contains the same description of the invention as a prior filed application and claims the benefit of the filing date of the prior application. See also Request for Continued Examination. Court of Appeals for the Federal Circuit. A U.S. federal court of appeals established in 1982 that reviews all appeals for patent cases from federal district courts. Declaration (or affidavit) for presenting additional information. A formal statement, signed by the person making the statement who is not necessarily an inventor, that is optionally submitted to the PTO on behalf of a patent applicant during the examination of an application. The statement introduces additional information, for example, experimental data, to support the argument that the invention defined in the claims is patentable. Declaration (or oath) for patent application. A formal statement required to be submitted to complete a patent application in the PTO, signed by the inventors to declare that they invented the invention described and claimed in the application, and that they acknowledge the duty to disclose to the PTO any information that may be material to patentability of the application. Design patent. A type of patent protecting the ornamental designs of an article having a practical utility for a term of 14 years from the date of issue of the patent. Disclosure. Description of the invention in a patent application or a patent. Disclosure is often used interchangeably with Specification in referring to a patent or patent application. See also Duty of disclosure and Invention disclosure. Divisional application. An application that contains the same description of the invention (or inventions) as a prior filed application and claims the benefit of the filing date of the earlier application, but contains claims that are related to only a portion of the original disclosure. Drawings (or figures of drawings). Line drawings or photographs submitted as part of a patent application to help describe the invention. Duty of disclosure. A legal obligation on the part of an inventor and other individuals involved directly or indirectly in the prosecution of a patent application before the PTO to disclose to the PTO any information of which the individual is aware, or should be aware, that may be material to patentability. See Information material to patentability. Enablement; enabling disclosure. The requirement that a patent application describe the invention sufficiently to enable a person of ordinary skill in the field of the patent to practice the invention claimed in the patent. File wrapper; also prosecution history. The physical file at the PTO that contains the official record of the examination of the application. Filing receipt. A document issued by the PTO formally acknowledging the filing of a patent application and informing the applicant of the filing date and serial number of the application. Since 2001, the filing receipt also indicates the confirmation number that serves as a cross-check for identifying the application. Final office action (or final rejection). A formal written communication from the PTO that maintains on a final basis a rejection stated in a prior office action. After the issuance of a final office action, the applicant has the right to appeal the examiner s decision immediately to the PTO s Board of Patent Appeals and Interferences, and the option of submitting another written response to the rejection. 17

18 18 First inventor defense. A defense available to a person who was first to invent in good faith and to use commercially in the United States a method of doing business but did not patent it, and another inventor subsequently files a patent application that issues as a patent for the same method. The first inventor is protected against a charge of patent infringement of the patent. Foreign filing license. A written statement from the PTO granting the applicant of a patent application filed in the PTO permission to file corresponding patent applications in other countries. The foreign filing license is ordinarily a statement that is incorporated into an official filing receipt issued by the PTO for the application. Grant or issue (of patent). Publication of the formal grant of a patent, on which date the patentee can begin enforcing the patent. Independent inventor. An inventor status given certain special considerations under U.S. patent laws, such as a 50% discount for most PTO fees, and the option of avoiding publication of a patent application if the independent inventor declares in writing that no corresponding foreign applications will be filed for the same invention. Information material to patentability. Information that compels a conclusion that a claim of a patent application is unpatentable. Infringement. The trespass on the rights of the owner of a patent by another party. Intellectual property. A generic description encompassing patents, trademarks, copyrights, and other available forms of protection for the products of mental work. In some countries, industrial property is used interchangeably with intellectual property. Interference. A proceeding in the PTO for determining which inventor or group of inventors was first to invent an invention claimed in an application X under examination, which is also claimed in another application Y or in a patent Z. Invention disclosure. A form provided by organizations for use by their inventors to report their invention to management for consideration for possible patenting. Issue fee. A fee to be paid to the PTO after a patent application has been allowed, to prompt the PTO to issue (grant) the patent by publishing it. An allowed application becomes abandoned if the issue fee is not paid in a timely manner. Issue (of patent). See Grant or issue (of patent). License (of patent). An agreement, usually in writing, in which the owner of a patent grants to another party the right to practice the patented invention without giving up ownership of the patent. A license may be granted to the party on an exclusive or non-exclusive basis. Maintenance fee. Fee required to be paid periodically to the PTO to maintain an issued patent. National stage (of international application filed in PCT system). The procedure of completing the formalities for a patent application in a country X after the filing in the PCT system of an international patent application in which X is designated as a country in which a patent is sought. The fee for designating a country in an international application is small compared with the cost of entering the national phase in each designated country. Therefore, the national stage eventually may not be entered for all the designated countries. The text of the international application is used as the text for the national stage, with translation into the language of country X as necessary. (Note: An application may also be filed directly in country X without relying on the PCT system.) Non-obviousness. A basic requirement for a claimed invention to be patentable under U.S. laws. The claimed invention must not be obvious from previously known technology. Novelty. A basic requirement for a claimed invention to be patentable. See Anticipation. In the United States, a claim lacks novelty if it is anticipated by a reference. Oath. See Declaration (or oath) for patent application. Obviousness. A basis for rejecting a claim in a patent application because the subject matter claimed is considered by the PTO examiner to be obvious from the technology described in a reference (or references) cited by the examiner. Office action. A formal written communication from a PTO examiner, usually containing a rejection of the claims of a patent application. Paris Convention. The Paris Convention for the Protection of Industrial Property is a treaty requiring each adhering country to accord to a patent applicant the benefit of the filing date of an application for the same invention filed not more than 1 year before in another country that adheres to the Paris Convention. Patent. A grant by a government to a patentee, as evidenced by an official document, of exclusive rights to the subject matter or invention claimed in the patent. Plant patent. A type of U.S. patent protecting plant varieties that are reproduced asexually, for a

19 term that is the same as for utility patents, without the requirement that maintenance fees be paid throughout the patent term. Prior art; prior art reference. A document or other evidence of previously known technology against which the patentability of an invention is assessed. Priority (claim to priority). The claim in a patent application to the benefit of the filing date of an earlier filed patent application for the same invention. Priority may be claimed under the Paris Convention based on the filing date of an earlier foreign application. Priority may also be claimed domestically in the United States based on a prior filed U.S. application. Prosecution. The history of the examination of a patent application in the PTO. Prosecution history. See File wrapper. Provisional application. A relatively new form of U.S. patent application requiring a much smaller filing fee and less stringent formalities than for a regular patent application. A provisional application automatically expires 1 year after its filing date and must be followed by the filing in the PTO, and in other appropriate patent-granting organizations as desired, of a regular patent application that claims priority based on the provisional application. Provisional rights. A new form of patent rights created under the AIPA to grant limited protection to a patentee for the period between the publication of a patent application and the date of issue of a patent. Reduction to practice. The making of an invention. (The filing of a patent application is considered to be a form of reduction to practice, known as constructive reduction to practice.) Rejection (of claim). A statement by an examiner that a claim in a patent application is not patentable for a reason specified by the examiner. Request for Continued Examination. A new procedure available under the AIPA for obtaining a new round of examination for a patent application by making a request accompanied by a fee after a final office action or a notice of allowance has been issued by the PTO. Response (to office action). See Amendment. Small entity. A status granted under U.S. laws to independent inventors, nonprofit organizations, and small businesses with the benefit of a 50% discount in most PTO fees. Specification. The portion of a patent application that describes in writing the invention, including the background of the invention. Statute and interpretation by a court. A statute is a provision of law enacted by the U.S. Congress and signed by the President. A court interprets the statute in applying it to a case before the court. Statutory invention registration. A publication by the PTO at the request of an applicant of the description portions of a patent application (i.e., without any claims). The applicant waives all rights to a U.S. patent in return for the publication, also known as defensive publication, which will prevent other parties from patenting the same technology. Term (of patent). Time period for which patent protection is granted. Utility. A basic requirement for an invention to be patentable under U.S. law. All applications, whether for utility, plant, or design patents, must describe an invention that has utility for it to be patentable. Utility patent. The most common type of U.S. patent, which generally conveys the most protection compared with the other two types of U.S. patent (design and plant patents). Resources Internet sites of governmental patent offices U.S. Patent and Trademark Office U.S. Patent and Trademark Office Washington, DC or ; fax ; TDD (Mailing address is in Washington, DC, even though PTO is in nearby Virginia.) The PTO website offers a large amount of information, including the full text of the following publications: Basic Facts about Patents. General information on patents, also available as a pamphlet at no charge from the PTO. Includes a list of publications available from the U.S. Government Printing Office. 19

20 General Information Concerning Patents. Greatly detailed information intended for inventors and prospective patent applicants. Also available as a publication for purchase ($2.25, document ) from the U.S. Government Printing Office, P.O. Box , Pittsburgh, PA For information, telephone (Washington, DC). The full text of U.S. patents issued since 1976 can be searched and full-page images of the patents can be viewed on the PTO website. The list of attorneys and agents registered to practice before the PTO can be searched on the PTO site. Links to other sources of patent information, including the European Patent Office and the World Intellectual Property Organization (listed below), can also be found at the PTO site. World Intellectual Property Organization The WIPO website has a section under Activities and Services that is dedicated to the Patent Cooperation Treaty (PCT) system. See in particular Basic Facts about the PCT. European Patent Office The EPO website provides a link to its very extensive patent database which can be accessed directly at The full text of patent applications published by the EPO and the full text of patents granted by the EPO can be searched on this site. The full text of international patent applications filed in the PCT system and published by WIPO (as WO patent documents) can also be searched. The database also provides English abstracts and titles for published Japanese patent applications and granted Japanese patents, as well as for patent documents from other countries. Full-page images of published patent applications or granted patents from the United States, the PCT system, the EPO, and the Japanese Patent Office can also be viewed in the database. Academic Internet sites Franklin Pierce Law Center The Intellectual Property Mall website is hosted by the Franklin Pierce Law Center, a law school specializing in intellectual property (IP) law. The site offers A Comprehensive Protocol for Mining Chemical IP Information (81 pages) and other documents related to chemical patent information. University of Texas at Austin Engineering Library The Engineering Library at this campus is one of the patent and trademark depository libraries affiliated with the PTO. The library s website offers a patent searching exploratory tutorial. The PTO website refers to this tutorial as a resource for independent inventors without endorsing the tutorial. Professional societies sites American Intellectual Property Law Association Jefferson Davis Highway, Suite 203 Arlington, VA ; fax Most of the information in this website is for attorneys practicing in intellectual property. However, the document An Overview of Intellectual Property What is a Patent, a Trademark, and a Copyright? provides a brief overview for the nonspecialist. Association of University Technology Managers This site offers samples of forms and other documents provided by member institutions, such as invention disclosure forms, intellectual property policies of the institutions, agreements between the institutions and researchers, licensing agreements, and others. 20

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